THE AMES COMPANIES, INC.

Patent Trials and Appeals Board

Feb 15, 2022

2021003233 (P.T.A.B. Feb. 15, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/729,071 12/28/2012 CHUN WAI HUNG AMSP0110PUS1 3744 22045 7590 02/15/2022 Brooks Kushman 1000 Town Center 22nd Floor Southfield, MI 48075 EXAMINER BURGESS, MARC R ART UNIT PAPER NUMBER 3666 NOTIFICATION DATE DELIVERY MODE 02/15/2022 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing@brookskushman.com kdilucia@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte CHUN WAI HUNG __________________ Appeal 2021-003233 Application 13/729,071 Technology Center 3600 ____________________ Before EDWARD A. BROWN, JAMES P. CALVE, and WILLIAM A. CAPP, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision of the Examiner to reject claims 1, 3-6 and 9-12, which are all the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies The Ames Companies, Inc. as the real party in interest. Appeal Br. 1. Appeal 2021-003233 Application 13/729,071 2 CLAIMED SUBJECT MATTER The claims relate to planters sized and shaped to nest in an efficient manner to provide a gap so the sidewalls do not contact each other when the planters are nested and no vacuum forms during separation of the planters. Spec. 1:9-10, 2:17-30, 5:5-10, 12:10-15, Figs. 1-3. Claim 1, the sole independent claim, recites a nesting planter assembly as follows: 1. A nesting planter assembly comprising: an upper nesting planter and a lower nesting planter, wherein the upper nesting planter and the lower nesting planters each include: a body having a base assembly and a depending body sidewall, said body defining a substantially enclosed space; said base assembly including a generally horizontal planar member and a stand-off feature; said stand-off feature structured to extend downwardly from said planar member and spaced inwardly from the body sidewall; wherein a substantial portion of said body sidewall of the upper nested planter is structured to correspond to the body sidewall of the lower nested planter when the upper and lower nested planters are nested; and a basin having a base member and a base sidewall extending upwardly from the base member, the basin connected to the base assembly such that the base sidewall extends upwardly along the depending body sidewall; wherein when the upper nested planter is disposed within the lower nested planter with the base member of the upper nested planter contacting the base assembly planar member of the lower nested planter, a gap is defined between the body sidewall of the lower nested planter and the body sidewall of the upper nested planter such that body sidewalls of the upper and lower nested planters do not contact each other. Appeal Br. Claims App. 1. Appeal 2021-003233 Application 13/729,071 3 REJECTIONS Claims 1, 3-6, and 9-12 are rejected under 35 U.S.C. § 103(a) as unpatentable over Liffers ’1302 alone, or in view of Hougaard3 or Fotos.4 Claims 1, 3-6, and 9-12 are rejected under 35 U.S.C. § 103(a) as unpatentable over Liffers ’1325 alone, or in view of Hougaard or Fotos. ANALYSIS Claims 1, 3-6, and 9-12 Rejected over Liffers ’130 alone, or in view of Hougaard or Fotos Appellant argues the claims as a group. See Appeal Br. 3-6. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). Regarding claim 1, the Examiner cites Liffers ’130 to teach a nesting planter with a body (pot 13), a base and planar member (bottom wall 31) with stand-off features (near openings 14), and a basin (base 12) having sidewalls extending upwardly along the depending tapered body sidewall 32. Final Act. 2-3. The Examiner finds that Liffers ’130 does not teach nesting planters expressly, but the Examiner takes official notice that it is well- known in the art that containers with sloped walls can be nested. Id. at 3. The Examiner determines that it would have been obvious to nest multiple planters together to save space during shipping and storage. Id. at 3-4. Alternatively, the Examiner finds that Hougaard teaches planters 10 that can be nested and determines that it would have been obvious to nest Liffers ’130’s planters, as taught by Hougaard, to save space for storing and shipping empty receptacles. Id. at 4 (citing Hougaard, 5:16-27). 2 US 2006/0032130 A1, published February 16, 2006. 3 US 5,870,855, issued February 16, 1999. 4 US 3,568,878, issued March 9, 1971. 5 US 2006/0032132 A1, published February 16, 2006. Appeal 2021-003233 Application 13/729,071 4 Alternatively, the Examiner finds that Fotos teaches planters 10 that can be nested together and determines that it would have been obvious to nest multiple planters of Liffers ’130 together as taught by Fotos to allow the containers to be stacked for shipping or dispensing purposes as taught by Fotos. Id. at 4 (citing Fotos, 1:33-36); Ans. 14 (citing Fotos, 2:45-75). Appellant does not challenge the Examiner’s taking of official notice that it is known in the art that containers with sloped walls can be nested. See Appeal Br. 4. Appellant argues that claim 1 does not recite merely nestable planters with a gap between the side walls when the planters are nested but instead recites the following specific arrangement: when 1) the upper nested planter is disposed within the lower nested planter with the base member of the basin of the upper nested planter contacting the base assembly planar member of the lower nested planter, then 2) a gap is defined between the body sidewall of the lower nested planter and the body sidewall of the upper nested planter such that body sidewalls of the upper and lower nested planters do not contact each other. Id.; see also id. at 5 (same argument). The Examiner explains that Hougaard and Fotos use spacing elements to space nested planters with a gap between their sidewalls. The Examiner cites Hougaard’s use of supporting legs 16c on a bottom of an upper pot that rest on a top wall of the base of a lower pot to prevent the pots from nesting too closely within one another with their respective sidewalls spaced apart. Ans. 13-14 (citing Hougaard, 5:16-27 and 4:8-10). The Examiner explains that Fotos also rests a base (pedestal 22) of an upper nested container on the bottom wall 14 of a lower nested container so the sidewalls of the containers do not engage with one another as claimed. Id. at 14 (citing Fotos, 2:45-75). Appeal 2021-003233 Application 13/729,071 5 Appellant replies that Hougaard’s use of lower supporting legs 16c to provide “distance elements between two posts nested in each other” does not teach that “a gap is defined between the body sidewall of the lower nested planter and the body sidewall of the upper nested planter” as claimed. Reply Br. 4 (“Appellant reasserts that Hougaard does not disclose anything about the gap defined between the sidewalls in a nested configuration as recited in claim 1.”). Appellant contends that Fotos teaches away from the required basin structure by teaching that the maximum diameter of the outer free extremity of the sidewall portion 24 of pedestal base 26 “is less than the smallest diameter of the container at the intersection of the bottom wall 14 and the sidewalls 16 of the container body portion 12 so as to facilitate stacking of a plurality of containers within one another.” Id. at 4 (citing Fotos, 2:20-57, Figs. 1-3). There is no dispute that Liffers ’130 teaches a planter with a body that has tapered sidewalls, a base assembly with a horizontal planar member and a stand-off feature that extends downwardly from the horizontal planar member, and a basin with a base member and base sidewall extending upwardly along the body sidewall as recited in claim 1. See Appeal Br. 3-6. The issue is whether it would have been obvious to nest the planter of Liffers ’130 with base 12 of an upper planter resting on bottom wall 31 of a lower planter such that “a gap is defined between the body sidewall of the lower nested planter and the body sidewall of the upper nested planter such that body sidewalls of the upper and lower nested planters do not contact each other” as claimed. For reasons that follow, we determine that a skilled artisan would have been motivated to modify Liffers ’130’s planters to nest with a gap based on official notice or teachings of Hougaard and/or Fotos. Appeal 2021-003233 Application 13/729,071 6 Because Appellant does not dispute that Liffers ’130 teaches every feature of claim 1 except the wherein “nesting” clause, or the Examiner’s taking of official notice that such containers can be nested (Final Act. 2-4; Appeal Br. 3-6), these facts are admitted. See In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970) (“Where the appellant has failed to challenge a fact judicially noticed and it is clear that he has been amply apprised of such finding so as to have the opportunity to make such challenge, the board’s finding will be considered conclusive by this court.”); In re Chevenard, 139 F.2d 711, 713 (CCPA 1943) (official notice by Examiner); MANUAL OF PATENT EXAMINING PROCEDURE § 2144.03 (Ninth Ed. Rev. 10.2019, June 2020); see also Spec. 1:13 (hollow tapered objects may be nested with one object positioned inside a similar object so they occupy slightly more space than a single object);6 37 C.F.R. § 41.37(c)(1)(iv) (appeal brief must identify error); In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (same). Because Liffers ’130’s teaches all of the claimed planter structure to include a stand-off feature (at opening 14) connecting basin 12 to bottom 31 of pot 13 to space the bottom of a top nested pot away from the bottom of a lower nested post (cf. Final Act. 7 (Examiner’s illustration of nested planters of Liffers ’130 with bottoms offset to provide a gap between the sidewalls)), the Examiner had a sound basis to determine that nesting the planters of Liffers ’130 would create a gap between the sidewalls as claimed when the lower basin 12 of an upper planter rests on a bottom wall 31 of a lower nested planter as claimed, as also is known and noticed in the art. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); see also MPEP § 2112. 6 As discussed below, Hougaard and Fotos teach tapered containers sides that can be nested. Hougaard, 4:7-12, 5:15-27; Fotos, 2:45-75, Figs. 1-4. Appeal 2021-003233 Application 13/729,071 7 [W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. Id. at 1478 (quoting In re Swinehart, 439 F.2d 210, 213 (CCPA 1971)). Appellant has not apprised us of error in the Examiner’s determination that skilled artisans would have been motivated to nest Liffers 130’s planters as is known in the art and doing so would space their tapered sidewalls apart with a gap as claimed. Appeal Br. 4-6. Nor has Appellant explained why nesting Liffers ’130’s planters would not define a gap when those planters have all of the claimed configuration. Ex Parte Frye, 94 USPQ 2d 1072, *4 (BPAI 2010) (precedential) (panel reviews rejections for error based on the issues identified by an appellant); Jung, 637 F.3d at 1365 (approving of the Board’s practice, as set forth in Ex Parte Frye, of requiring an appellant to identify Examiner error in a rejection and noting that even if an examiner failed to make a prima facie case, the Board would not have erred in framing the issue as one of “reversible error”); 37 C.F.R. § 41.37(c)(1)(iv) (“The arguments [in the appeal brief] shall explain why the examiner erred as to each ground of rejection contested by appellant.”). Spacing the bottoms of nested planters apart also defines a gap between their tapered sidewalls. That the Examiner’s illustration of nested planters of Liffers ’130 lacks a basin is a distinction without a difference. See Appeal Br. 4; Final Act. 7. Nonetheless, it illustrates that a standoff spaces nested planters apart and defines a gap between the sidewalls because the standoff matches parts of the inner/upper planter next to parts of the outer/lower container with a larger diameter, thereby defining a gap based on the extent of the standoff. Appeal 2021-003233 Application 13/729,071 8 Hougaard and Fotos also nest planters with tapered sidewalls and a depending feature that spaces the nesting planters apart and defines a gap between the sidewalls as claimed. In Hougaard, supporting legs 16c extend downwardly from the upper planter (shell 10, Fig. 10) and contact a base assembly planar member (top wall 24) of the lower nested planter to space the upper planter apart from the lower nested planter. Hougaard, 5:16-27, Figs. 9, 10. Legs serve the same purpose as spacing projections on rim 12 to “prevent the pots from nesting too closely within one another.” Id. at 4:7- 12. A skilled artisan would have been motivated to apply this teaching to Liffers ’130 so that Liffers ’130’s standoff’s (elements at locks 14 in Fig. 3) and the attached base 12 contact bottom wall 31 planar member of the lower nested planter to space apart nested planters and define a gap between the sidewalls of the nested planters so they stack efficiently without sticking. Appellant is correct that Hougaard lacks a basin as claimed. Appeal Br. 5. However, Liffers ’130 teaches this feature, which Appellant does not dispute. The Examiner modifies Liffers ’130’s basin 12 and standoffs 14 based on Hougaard’s teachings to use very similar supporting legs 16c as “distance elements” to space apart nested posts so Liffers ’130’s planters can be nested with a gap between their sidewalls (so they don’t nest too closely together) as claimed. See Ans. 13. Appellant’s attack on the individual teachings of the references does not apprise us of error in the Examiner’s combination of their teachings. See In re Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.”). A skilled artisan is a person of ordinary creativity. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Appeal 2021-003233 Application 13/729,071 9 Hougaard teaches it is known in the art to use spacing projections 30 on a top rim 12 or supporting legs 16c on a base to “prevent the pots from nesting too closely within one another, when a number of pots are stacked on top of each other.” Hougaard, 4:7-12, 5:16-27, Figs 2, 10. A skilled artisan would understand this disclosure to teach/very strongly suggest that the distance elements define a gap between sidewalls of nested containers so they don’t nest too closely, particularly when multiple pots are stacked. A skilled artisan would have been motivated by these teachings to nest the planters of Liffers ’130 so the standoffs 14 of base 12 space apart the nested containers when base 12 of an upper container rests on bottom wall 31 of a lower container thereby to define a gap between their sidewalls. Hougaard’s teachings also make it obvious to experiment with the standoff distance to discover an optimal gap between the sidewalls for space savings and ease of separation. See E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d 996, 1006 (Fed. Cir. 2018) (“For decades, this court and its predecessor have recognized that ‘where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’”) (quoting In re Aller, 220 F.2d 454, 456 (CCPA 1955)); see also Final Act. 4 (citing Aller); Ans. 11-12 (same). Fotos uses a similar lower pedestal 22 as a distancing element to space apart nested containers 10 with a gap between their sidewalls. Fotos, Fig. 2. The pedestal base 26 of an upper nested container rests on an upper surface (bottom wall 14) of a lower nested container 10 so that the containers nest “without the sidewalls of the containers engaging each other,” i.e., with a gap between their sidewalls. Fotos, 2:45-75. The gap prevents stacked containers from wedging together and entrapping air. Id. at 2:72-75. Appeal 2021-003233 Application 13/729,071 10 It is well-settled that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” See KSR, at 417; see also In re Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016) (appellant’s hindsight argument was addressed by showing that a proper motivation to combine the references existed); Reply Br. 3 (arguing hindsight). Hougaard also teaches that a similar spacing projection 30 placed on upper rim shoulder 12 is used to “prevent the pots from nesting too closely within one another, when a number of pots are stacked on top of each other.” Hougaard, 4:7-10, Fig. 2. Although this embodiment may not result in the bottom of an upper pot resting on the bottom surface of the lower nested pot as claimed (as Appellant asserts, see Reply Br. 3), the teachings nonetheless are material to understanding Hougaard’s embodiment in Figure 9 that uses bottom spacing projections 16c. They convey the general knowledge in the art to configure spacing projections of nesting planters to space the planters apart in a vertical/axial direction so the pots do not nest together too closely, i.e., so the posts nest with a sufficient/desired gap between their sidewalls. A skilled artisan would understand from these teachings of Hougaard and Fotos that spacing projections/distance elements/pedestals are used to space apart nesting containers so they can nest together without nesting too closely together, i.e., nesting with a gap between sidewalls that allows the nested containers to be separated. These teachings would have motivated a skilled artisan to experiment with spacing projection to determine optimum gaps so containers nest efficiently but also separate easily. Claim 1 merely requires a “gap” to be defined with no details of the stand-off or the gap. Appeal 2021-003233 Application 13/729,071 11 Nor has Appellant argued a particular meaning for the “gap” that is defined between the body sidewalls of the lower and upper nested planters, or for a stand-off configuration used to create the defined gap. See Appeal Br. 1 (claimed subject matter), 3-6. Claim 1 does not recite a sidewall of any particular configuration. See Spec. 1:13-2:2 (nested objects have the same cross-sectional area but are slightly elongated compared to a single object and tend to stick when the taper is not great). Given this breadth, the Examiner chose broad teachings in the prior art that containers with tapered sidewalls are nested and spacing elements are used to facilitate nesting of containers with tapered sidewalls. These teachings would motivate a skilled artisan to experiment with different spacing projections to achieve a desired gap between sidewalls of nested containers based on the shape, angle, and material of the sidewalls to facilitate nesting of containers and subsequent separation. See In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012) (“A reference may be read for all that it teaches, including uses beyond its primary purpose.”); EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (“A reference must be considered for everything it teaches by way of technology and is not limited to the particular invention it is describing and attempting to protect.”); In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) (“[T]he question under 35 U.S.C. § 103 is not merely what the references expressly teach, but what they would have suggested to one of ordinary skill in the art at the time the invention was made.”). Accordingly, we affirm the rejection of claim 1 based on Liffers ’130 and the official notice taken by the Examiner, and based on Liffers ’130 in view of the teachings of Hougaard or Fotos. Claims 3-6 and 9-12 fall with claim 1. Appeal 2021-003233 Application 13/729,071 12 Claims 1, 3-6, and 9-12 Rejected over Liffers ’132 alone, or in view of Hougaard or Fotos The Examiner enters a second rejection relying on Liffers ’132 to teach all the elements of the claimed planter except for an express teaching of stacking the containers to define a gap between the sidewalls as claimed. Final Act. 8-10. The Examiner takes official notice that such planters can be nested in an assembly and cites teachings of Hougaard and Fotos that nested containers with standoffs have a gap between sidewalls as discussed above for the previous rejection of claim 1. See id. at 10-12; cf. at 4-6. Appellant argues that Liffers ’132 does not teach or suggest the claimed arrangement wherein when the upper nested planter is disposed in the lower nested planter with the base member of the basin of the upper nested planter contacting the base assembly planar member of the lower nested planter, a gap is defined between the body sidewall of the lower nested planter and the body sidewall of the upper nested planter as claimed. Appeal Br. 7. Appellant asserts that the combination of Liffers ’132 with Hougaard and Fotos does not teach or suggest these features for the reasons described for the first rejection. Id. at 7-8. These arguments were considered and found to be unpersuasive in the previous rejection and are unpersuasive for the same reasons here. We agree with the Examiner’s findings and determinations of obviousness on all bases and adopt them as our own for this rejection. Our analysis for the previous rejection also applies equally to this rejection for the same reasons. Accordingly, we sustain the rejection of claims 1, 3-6, and 9-12 as unpatentable over Liffers ’132 in view of official notice and Liffers ’132 in view of the teachings of Hougaard or Fotos. Appeal 2021-003233 Application 13/729,071 13 Appellant’s argument that Fotos teaches away from the claimed basin structure is made for the first time in the Reply Brief and is untimely. See Reply Br. 4-5; Ans. 14; 37 C.F.R. § 41.41(b)(2); Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative). Moreover, this argument does not persuade us of error in the Examiner’s use of Fotos’s teaching to use a standoff (pedestal 22) to nest containers with spaced sidewalls to nest the planters of Liffers ’130 or ’132 similarly. Fotos nests containers by placing bottom pedestal 22 of an upper nested container against the bottom surface/base 14 of the lower nested container. Fotos, 1:45-75, Figs. 1-4. The portion of Fotos’s base 26 that contacts the base 14 of the lower nested container is a smaller diameter than a diameter of the container where its walls meet the base 14 proximate to base 26. In other words, Fotos teaches a feature of nestable containers that is the same as Appellant’s nestable planters, namely, that the outer diameter of the lower most portion of the standoff (whether a pedestal in Fotos or a claimed basin) is less than the diameter of the base of the lower container/planter in which it is nested. The Examiner did not admit that the planters either of Liffers ’130 or Liffers ’132 cannot be nested and/or are not shaped to be nested. See Reply Br. 2. The Examiner found that both of these references teach the overall planter container configuration and lack only the explicit teaching that their planters can be nested into an assembly of upper and lower planters. Final Act. 3. Hence, the Examiner took official notice of this knowledge in the art and also provided evidence from Hougaard and Fotos of such practices to support a determination of the obviousness of the claimed assembly as discussed above. Appeal 2021-003233 Application 13/729,071 14 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3-6, 9-12 103(a) Liffers ’130, Hougaard, Fotos 1, 3-6, 9-12 1, 3-6, 9-12 103(a) Liffers ’132, Hougaard, Fotos 1, 3-6, 9-12 Overall Outcome 1, 3-6, 9-12 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED